T 226/07 – Exploring Strange Places

The patent proprietor filed an appeal against the decision of the Opposition Division revoking the opposed patent.

He filed a new request during the oral proceedings (OPs) before the Board.

Claim 1 as amended read (in English translation):

Motor vehicle having B columns, in particular of the coupé or cabriolet type (1;101), comprising side walls (3) delimiting the occupants’ space below a window breast (16), the B columns being arranged within the vertical extent of the side walls, wherein vertically oriented reinforcement profiles (5) are assigned to the B columns in order to absorb forces acting laterally on the vehicle (1;101), wherein there is at least one cantilever arm extending substantially transversely to the vehicle between the B columns, wherein the cantilever arm (6) is connected to the vehicle via a connection area (15) that is separated from the lower end of the reinforcement profile (5), characterised in that a cantilever arm (6) extends transversely to the reinforcement profiles (5) towards the vertical longitudinal centre plane (7) of the vehicle and in that the cantilever arms (6) are separated from one another by a central joint (9) in the region of the vertical longitudinal centre plane (7). (my emphasis)

The opponent pointed out that this request was late filed and should not be admitted, in particular because the “central joint” feature had not been part of any of the claims on file before.

What I found interesting in this decision is how the Board dismissed this argument.

*** Translation of the German original ***

[2] As submitted by the [opponent], the feature “by a central joint”, which is an addition with respect to claim 1 of auxiliary request 4 filed together with the statement of grounds of appeal, has been extracted from the description of the patent.

However, the skilled person understands from the introductory part of the description of the patent (see, in particular, column 2, lines 26 to 43) that the use of a central joint is an important aspect of the inventive idea (Erfindungsgedanke) disclosed in the patent in the context of the problem mentioned therein (column 1, lines 40 to 50: reducing repair costs).

Moreover, one may note that this feature corresponds to the subject-matter of dependent claim 3 of the priority document […]. In view of the fact that the question of priority was extensively discussed during the opposition proceedings, the [opponent] necessarily knew the significance of this feature. Moreover, the added feature limits the subject-matter of independent claim 1 of the previous auxiliary request 4 in a direction that corresponds to the disclosed inventive idea (cf. T 1685/07).

Therefore, in the present circumstances of this case, the Board did not see any incentive not to admit this request when exercising its discretion pursuant to Article 13(1) RPBA. Nor does the Board consider that the requirements for postponing the OPs pursuant to Article 13(3) are fulfilled in the present case because the subject-matter as limited does not create the need for any particular preparation in view of the OPs.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 312/11 – On Remedies

The present decision deals with a case which itself is much more interesting than the decision it resulted in.

The application under consideration was filed under the PCT on April 27, 2001, claiming three priorities. There was an A2 publication on November 8, 2001. Only two of the three priorities were completely cited.

On February 12, 2002, the WIPO informed the applicant that the third priority claim was deemed not to have been made because the applicant had not responded to the invitation under Rule 26bis.2(a) PCT.

The A3 publication dated May 10, 2002, mentioned only the first two priorities.

The WIPO transmitted two priority documents to the EPO.

On November 22, 2002, the applicant entered the European phase.

In a letter to the EPO dated February 7, 2003, the applicant filed amended claims and also made a statement on the priority issue:

On April 10, 2003, the Receiving Section of the EPO contacted WIPO on this matter. The answer was as follows:

On March 27, 2003, the EPO informed the applicant accordingly:

WIPO also had become aware that page 25 of the A2 publication was incomplete and re-published the application (as an “A9” document) on July 3, 2003. Again, only two priority documents were cited.

In the meantime the examination proceedings had started. After a considerable number of A 96(2) notifications and telephone interviews, the Examining Division (ED) finally granted a patent with amended claims. The decision to grant a patent, dated June 25, 2009, became effective on July 22 of the same year with the publication of the mention of the grant in the European Patent Bulletin.

On June 2, 2010, the appellant filed a request to the ED for correction of the decision according to R 140. It argued that the reference to the third priority document, erroneously omitted from the publication, should be introduced into the bibliographic data of the patent.

On the very same day, the representative filed an appeal and a request for re-establishment of rights in order to remedy the failure to observe the time limit for filing an appeal.

The appellant requested that the decision to grant a patent be set aside and a new decision be issued including the reference to the third priority document.

On January 26, 2011, the ED informed the appellant that the requested correction under R 140 was considered allowable.

With a letter dated April 28, 2011, the appellant withdrew the appeal and requested reimbursement of the appeal fee and of the fee for re-establishment of rights. It alleged that the appeal was redundant in view of the fact that the ED’s decision to correct the appealed decision applied ex tunc. The appeal should thus be considered inadmissible or deemed not to have been filed.

On June 6, 2011, the Board nevertheless issued a provisional opinion:

[6] … the board considers that, prior to the examination of the appellant’s request for reimbursement of the appeal fee under R 103, it is necessary to examine its request for reestablishment of rights for filing an appeal.

[7] The present appeal was filed almost one year after the notification of the decision to grant, thus clearly outside the time limit of two months set by A 108. Thus the appeal can only be considered duly filed if the request for re-establishment of rights under A 122 is allowed. However the board is of the opinion that the request for re-establishment of rights cannot be granted because it appears that not all due care required by the circumstances has been taken.

[8] In particular it is noted that the issue of the missing reference to the third priority document had been raised once by the appellant, then applicant, in letter dated 07 February 2003. A subsequent e-mail exchange between the EPO and the International Bureau is on file, wherein a reply from the International Bureau confirmed that there had indeed been a mistake which was to be corrected and that a confirmation would be sent to the applicant and authorities concerned. The Receiving Section of the EPO then issued a communication dated 27 May 2003 informing the applicant that the third priority would be registered upon receipt of the relevant communication from the International Bureau, and that a correction in Section II of the PCT Gazette would be published. The applicant was furthermore urged to take up contact with the PCT Receiving Office in order to speed up the process, and it was informed that the mentioned priority document was not yet available in the EPO’s files.

[9] There is no evidence on file that the relevant communication from the International Bureau was received, neither by the EPO nor by the applicant, during the grant proceedings. Moreover a correction in Section II of the PCT Gazette was published in PCT Gazette No.27/2003 (03 July 2003) but it only concerned replacement of a page of the description and did not make any reference to priority. Pursuant to this entry in the PCT Gazette, a corrected version of the international publication pamphlet was published on 03 July 2003, wherein the third priority document is still missing.

[10] Despite the absence of any indication that the issue of the third priority claim had been settled, the applicant has made no further enquiries in this respect during the entire examining procedure. It is noted that a communication from the ED, dated 18 February 2005, even states that “[t]he present application claims priority from US 60/200,580, filed on 28.04.2000 and from US 60/240,169, filed on 13.10.2000.”, thus omitting a reference to the third document. Exactly the same statement is made again-in a further communication of the ED dated 06 June 2006. Finally an annex to the communication under R 51(4) EPC 1973 dated 20 November 2007, comprising the bibliographic data for the patent publication, indicates the same two priority documents mentioned above.

[11] It appears that the applicant should have been alerted, if not by the abovementioned communications from the ED, then at the latest by the annex to the R 51(4) EPC 1973 communication, that the issue of the third priority document had not yet been satisfactorily settled. However the applicant, who made several submissions with letters of 28 May 2005, 7 September 2007 and 11 March 2009, failed each time to address this problem.

[12] The appellant has disclosed in detail the procedure followed at the representative’s office in relation to R 51(4) EPC 1973 communications. Said procedure comprises checking by the office’s formalities department and by members of the office’s biotechnology group, and involves the use of a checklist covering various details to ensure that the records held by the EPO are correct. However it was inadvertently failed to notice that there was an inconsistency between the representative’s own records and the bibliographic data attached to the R 51(4) EPC 1973 communication in what concerned priority designations. The appellant argues that this should be considered as an isolated failure in a robust and satisfactory system, which should be excused pursuant to A 122(1).

[13] The board considers that, given the circumstances of the present case in which there was a problem with priority designations from the onset, a more thorough control, specifically directed to that issue, would have been required to monitor and follow up, at the latest upon receipt of the communication under R 51(4) EPC 1973, the settlement of this issue. Such a control however has obviously not taken place.

[14] Moreover, the appellant has not given any explanation about the reasons why the priority issue was not addressed all along the examination procedure. Furthermore, it should also be noted that it is only almost one year after the notification of the decision to grant that the appellant took again action concerning the third priority, following instructions from the proprietor’s US representative, which again implies that the system implemented at the European representative’s office was not sufficiently efficient.

[15] The board is thus of the opinion that the request for re-establishment of rights under A 122 cannot be allowed and as a consequence the appeal is deemed not filed within the due time limit stipulated by A 108. Therefore, the board is inclined at present to issue a negative decision in line with the above considerations and order the reimbursement of the appeal fee but not of the fee for re-establishment of applicant’s rights. …

With a further letter dated August 5, 2011, the appellant withdrew its request for re-establishment of rights and its request for reimbursement of the fee for re-establishment of rights. The appellant finally requested that the appeal fee be reimbursed.

The reasons for the final decision of the Board read:

[1] Although the present appeal was withdrawn from consideration by the Board of Appeal in respect of admissibility and allowability, the Board of Appeal, in the exercise of its inherent power, is authorised to examine the appellant's request for reimbursement of the appeal fee (see T 41/82 and J 12/86).

[2] According to A 108 the notice of appeal shall be filed, in accordance with the Implementing Regulations, at the EPO within two months of the notification of the decision. Notice of appeal shall not be deemed to have been filed until the fee for appeal has been paid.

[3] In the present case the notice of appeal was filed and the appeal fee was paid almost one year after the notification of the decision of the ED, thus clearly outside the time limit of two months set by A 108.

[4] Therefore, the appeal is deemed not to have been filed. There is no legal basis for payment of the appeal fee which, for this reason, is reimbursed.

I find this case noteworthy because it raises some interesting questions. The ED granted a request for correction under R 140 - which rule concerns linguistic errors, errors of transcription and obvious mistakes - but should it have done so? Was there really an error in the decision to grant a patent? Most certainly there had been an error in the PCT proceedings, but can the decision to grant a patent be said to have been affected by this error?

The appeal is interesting, too. Was there any valid ground for appeal? Was the applicant really adversely affected within the meaning of A 107 by the decision to grant a patent? Obviously, the lacking priority could in principle have adversely affected the applicant, e.g. if the ED had dismissed the main request of the applicant as lacking novelty over some prior art filed or published between the third priority date and the PCT filing date and had granted only an auxiliary request. But this appears not to have been the case here.

So even if the request for re-establishment had been granted, the appeal might have been inadmissible. Having said this, as the Board did not go so far, we shall never know for sure.

What do you think?

To read the whole decision, click here.

The file wrapper can be found here.

T 584/09 – Never Mind The Translation

The opponent filed an appeal against the decision of the Opposition Division to maintain the patent in amended form.

The decision contains an interesting paragraph dealing with the novelty of claim 5 of auxiliary request 5, which read (in English translation):

Moulded article (Formkörper) for the non-systemic control of parasitic insects on animals, comprising imidacloprid in a mixture with synergists or other active compounds.

*** Translation of the German original ***

[6.3] Claim 5 of auxiliary request 1 is directed to a moulded article (Formkörper) comprising imidacloprid for the non-systemic control of parasitic insects on animals.

Examples 1 and 10 of document D13 discloses wool, woollen yarn or a sheet-like structure of wool which have been treated with a dye solution containing imidacloprid in order to protect the dyed material against being eaten by moths and beetles.

[6.3.1] In its argumentation regarding lack of novelty, the [opponent] referred to the English translation of claim 5 where the term Formkörper was translated by “shaped article”. A sheet-like structure of wool such as the one disclosed in document D13 was a “shaped article”. Moreover, this sheet-like structure was impregnated with imidacloprid as well as another insecticide, the quantities of which were sufficient for non-systemic control of parasitic insects. Therefore, it was suitable for the use referred to in claim 5, irrespective of whether such a use had been disclosed.

[6.3.2] First of all it has to be noted that pursuant to A 70(1), it is the German language that is relevant because it is the language of the proceedings. Therefore, when assessing novelty, one has to consider the meaning of the German term Formkörper and not what might be encompassed by “shaped article” as used in English.

The technical expression Formkörper does not simply refer to a three-dimensional object, i.e. an article having a certain shape, but designates a particular object that has been produced in a particular way, i.e. from moulding compounds (Formmassen). The latter are liquid, paste-like compounds, in particular synthetic materials, which can be moulded by non-cutting moulding (e.g. injection moulding, extrusion, compression) into moulded articles. Wool, woollen yarns and sheet-like structures of wool such as those disclosed in document D13 are not encompassed by this term.

For this reason alone document D13 cannot anticipate the subject-matter of claim 5.

[6.3.3] During the oral proceedings the [opponent] also argued that the fumigating coils mentioned in document D8 were encompassed by the expression “shaped article”. Moreover, this document also mentioned impregnated natural and synthetic materials. The materials cellulose and starch mentioned in paragraphs [0053] and [0079] of the opposed patent were encompassed by those expressions.

[6.3.4] However, the expressions “synthetic and natural materials” in document D8 and “moulded article” (Formkörper) are not equivalent at all. For example, materials made from wool, paper or leather are encompassed by the expression “natural and synthetic materials” but do not qualify as “moulded articles” […]. Also, the fact that according to the opposed patent both cellulose and starch qualify for the production of moulded articles does not mean that, conversely, that the impregnated materials mentioned in document D8 necessarily are moulded articles. The same holds true for the fumigating coils mentioned in document D8. This document does not explain from which materials and how they were made, nor has the [opponent] provided proof that they necessarily are or have to be moulded articles within the above meaning.

[6.4] Therefore, the Board comes to the conclusion that claims 1 and 5 of auxiliary request 1 are novel within the meaning of A 54.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 1652/08 – Changes In Composition

The patent proprietor filed an appeal against the decision of the Opposition Division (OD) revoking the opposed patent.

The appellant requested the Board to remit the case to the OD because the composition of the latter had changed before the oral proceedings (OPs). This was a substantial procedural violation because the parties had not even been informed on the change before the OPs. As a consequence, it was not certain that the provisional opinion expressed in the summons was maintained and it could not be excluded that the new chairman would have a different approach. Therefore, the proprietor’s right to be heard had been violated. Decision T 862/98 was cited in this context.

The Board was not persuaded:

*** Translation of the German original ***

[2.1] The appellant considered the fact that the composition of the OD had been modified before the OPs were held constituted a substantial procedural violation that had to result in the impugned decision being set aside and the case being remitted to the first instance. For the following reasons, the Board has come to the conviction that there was no procedural violation.

[2.2] The change of the chairwoman of the OD took place after the summons to OPs had been sent (on November 21, 2007) but before the OPs (held on July 10, 2008). The proceedings preceding the OPs and in particular all the exchanges between the OD and the parties were exclusively in writing. Therefore, the new chairwoman had the opportunity of getting acquainted with and assessing all the facts and arguments which had been submitted by the parties in the very same way as the original chairwoman. The OPs were held by the OD in its new composition. This composition was not changed any more until the end of the proceedings. All persons taking part in the impugned decisions had the same opportunity of getting completely acquainted with and assessing all oral and written submissions of the parties.

[2.3] The present case differs considerably from the facts underlying decision T 862/98. This decision dealt with a change of the composition of the OD after the OPs. In agreement with the former case law the Board in T 862/98 found that such changes of the composition generated the risk that the written decision did not correctly reflect the opinion of the three members who participated in the OPs and that a member that had joined the Board (sic) after the OPs was not aware of what actually happened in the course of the OPs (cf. T 862/98 [2.3.2] referring to T 243/87).

[2.4] This risk does not exist in a case where the composition of the OD has not been modified between the OPs and the end of the proceedings. Therefore, the Board comes to the conclusion that a modification of the composition of the OD carried out before the OPs as such does not constitute a violation of the right to be heard and that no procedural violation justifying that the impugned decision be set aside and the case be remitted [to the OD] has occurred in the present case. The OD was correctly composed at any time and, therefore, A 19(2) has not been violated either.

[2.5] The appellant pointed out that he had been surprised by the change in the composition of the OD and that he could not rely any more on the fact that the provisional opinion of the OD explained in the summons [to OPs] did indeed reflect the opinion of the OD in its new composition. For this reason also the right to be heard had been violated.

[2.6] Whether the right to be heard has been violated is to be assessed only on the basis of whether the grounds on which the decision is based have been brought to the attention of the parties and whether they had an opportunity of commenting them (A 113(1)). This would also hold true if the OD had changed its position between the summons and the OPs, which has not been shown by the appellant anyway.

The appellant has not established that he could not comment on the reasons for the subsequent decisions in an appropriate way. Therefore, the Board does not see any indication that a violation of the right to be heard or another substantial procedural violation has occurred.

Should you wish to download the whole decision (in German), just click here.

The file wrapper can be found here.

T 1194/08 – Stick To What You Said

The patent proprietor and the opponent filed an appeal against the decision of the Opposition Division (OD) to maintain the opposedpatent in amended form.

The parties were summoned to oral proceedings (OPs) on 22 June 2011. With its letter of 13 May 2011 the proprietor indicated that it would not be present.

Claim 1 of the main request (patent as granted) reads as follows:

Automatic rotating labelling machine (1) comprising a rotatable support (3) carrying means (5) for gripping bottles or containers (6) to be labelled, said support (3) being operatively associated to at least one labelling unit (8, 9) that applies labels (19) to said bottles or containers (6), said rotatable support (3) being arranged at an upper end of said machine (1), and said gripping means (5) gripping said bottles or containers (6) at an open or upper portion thereof, and holds them below said support (3), characterised in that it comprises an upper platform (20) supported by columns (21) carrying at least a motor (4) and said rotatable support (3).

The Board made an interesting statement on how the OD had dealt with a late filed document:

[2.1] E15 and E16 were late filed documents in the opposition proceedings. For the purpose of the present decision it is only necessary to consider the admittance of E15.

[2.2] E15 was filed by the opponent during the opposition proceedings with letter of 5 June 2007. The preceding communication of the OD dated 16 February 2007 had been favourable to the opponent. Nevertheless, the opponent considered that it wished to respond to one of the comments of the OD regarding a feature that the OD considered was not disclosed in the nearest prior art document. It responded by filing E15 […].

[2.3] With its letter also dated 5 June 2007 the proprietor filed three auxiliary requests. With its subsequent letter of 24 October 2007 the proprietor filed comments regarding E15 without objecting to its admittance into the proceedings.

[2.4] In its provisional opinion accompanying the summons to OPs dated 31 October 2007 the OD indicated that E15 was accepted as a belated submission. It further considered that the first auxiliary request was allowable taking into consideration E1 to E15.

[2.5] In its letter dated 28 March 2008, i.e. five days before the OPs, the proprietor objected for the first time to the admittance of E15 into the opposition proceedings. It repeated this objection at the start of the OPs before the OD.

[2.6] The OD decided to reject the document as having been late filed and because it considered that it was not more relevant than E1 or E4 […].

[2.7] The opponent objected in its appeal grounds to the non-admittance of the document into the proceedings. Moreover, it also referred to the document in its response dated 19 December 2008 to the appeal of the patent proprietor with respect to the fourth auxiliary request of the proprietor […].

[2.8] In the opinion of the Board the OD was not entitled during the OPs to reverse its admittance of the document. The opponent was entitled to rely on the earlier decision of the OD to admit the document into the proceedings. Also, the request of the proprietor shortly before the OPs, when beforehand it had dealt with the document, may itself be considered to have been made too late. This view of the Board was already set out in its provisional opinion accompanying the summons to OPs.

[2.9] The Board therefore considers that E15 is already in the proceedings so that there is no need to take a decision regarding its admittance into the appeal proceedings.

The Board then found the main request and the second auxiliary request to lack inventive step and the first auxiliary request to violate A 123(2). There is an interesting obiter dictum concerning the second auxiliary request:

[5.1] The Board notes that the opponent raised a number of points of a so-called formal nature relating to alleged inconsistencies of the description and the depending claims with claim 1 of this request. Had the Board found that the subject-matter of the claim was patentable then it would have been necessary to examine these points before a decision could have been taken to allow the request.

[5.2] In its communication accompanying the summons to OPs the Board had explicitly indicated that new requests should be accompanied by a correspondingly amended description and, if appropriate, amended claims […]. Despite this indication the proprietor has not made any such amendments. Had the Board found that the subject-matter of claim 1 of the request involved an inventive step then it would have had to consider whether the amended patent also met the other requirements of the Convention, cf. A 101(3)(a). A cursory assessment suggests that this is not the case, e.g. the embodiment of figure 9 is outside of the scope of the claims, so that even if the Board had found positively for the proprietor with respect to inventive step it would probably still have revoked the patent, cf. A 101(3)(b).

Should you wish to download the whole decision, just click here.

The file wrapper can be found here.

A nice summary in French can be found on Laurent Teyssèdres’s blog.

In conclusion, Laurent offers good advice: 

“Be careful not to forget to file an appropriate description together with each request when you intend not to attend the OPs.”

T 603/08 – Very Meaningful

I have the impression that there is some kind of consensus that A 69 is not to be invoked in novelty and inventive step assessments (see e.g. here and here). This does not mean, however, that the Boards will not invoke the description and the drawings in this context, as the present decision shows.

Here the applicant filed an appeal against the decision of the Examining Division to refuse the application under consideration.

Claim 1 of the main request before the Board read (in English translation):

A device for transmitting an excursion of an actuator (2;102), comprising at least one transmission element (4;104), a first, a second, and a third bearing area (6,8,10;106,104,106), wherein the first bearing area (6;106) is assigned to a counter bearing, the second bearing area (8;108) is assigned to the actuator (2;102) and the third bearing area (10;110) is assigned to a control member (20;120), wherein the at least one transmission element (4;104) is supported with the first bearing area (6;106) against the counter bearing when the actuator (2;102) is operated and moves the control member (20;120) with the third bearing area (10;110) by means of a rotational motion about a point of rotation, wherein the at least one transmission element (4,104) is configured substantially in the form of a plate (5;105), which is disposed substantially perpendicular to the control motion (L), and wherein the first, second and third bearing areas (6,8,10;106,104,106) are each configured as substantially flat surfaces on the plate (5;105), wherein there is a distance (C) between a central axis (M) of the actuator (2) and a central axis (M) of the control member (20).

Here is what the Board had to say on this request:

*** Translation of the German original ***

[3.1] Document D3 […] discloses an injection valve in which the excursion of an actuator 1 is transmitted to a control member 6 by means of a transmission element 14. The transmission element is supported with a first bearing area 15 on a bearing surface 8 of the valve body 3 and with a third bearing area 17 on the centre of the control member 6. The second bearing area touches an actuator piston 10. As shown by dash-dotted lines in figure 3, there is a distance b between a central axes of the actuator and the control member […]. The point of rotation of the transmission element is vertically above the first bearing area 15.

Moreover, document D3 shows a transmission element 14 in a perspective view (figure 4). It substantially has the shape of a cylinder wherein the limiting surfaces that are perpendicular to the lateral surface of the cylinder have triangular shape with rounded corners […].

[3.2] Thus, put in the language of claim 1, document D3 discloses a device for transmitting an excursion of an actuator 1, comprising a transmission element 14 having a first bearing area 15, a second bearing area 16, and a third bearing area 17, wherein the first bearing area 15 is assigned to a counter bearing, i.e. the valve body 3, the second bearing area 16 is assigned to the actuator 1 and the third bearing area 17 is assigned to a control member 6, wherein the transmission element 14 is supported with the first bearing area 15 against the counter bearing when the actuator 1 is operated and moves the control member 6 with the third bearing area 17 by means of a rotational motion about a point of rotation D, wherein there is a distance b between a central axis of the actuator 1 and a central axis of the control member 6.

[3.3] Besides the above mentioned features, which are disclosed in document D3, claim 1 also comprises the following features:

(i) … “wherein the at least one transmission element (4,104) is configured substantially in the form of a plate (5;105)”, and

(ii) … “wherein the first, second and third bearing areas (6,8,10;106,104,106) are each configured as substantially flat surfaces on the plate (5;105)”.

[3.4] The Board is of the opinion that in order to carry out a meaningful comparison of the subject-matter of claim 1 with the prior art, and in particular with document D3, it has to be established what is to be understood by “in the form of a plate” (feature (i)) and “substantially flat surfaces on the plate” (feature (ii)) according to the embodiments (Ausführungen) presented in the description, the drawing and the dependent claims of the application.

This [approach] complies with the principle established and applied by the Boards of appeal that the description and the drawings of are to be used for interpreting the claims when the subject-matter (Gegenstand) of a claim is to be determined, in particular in order to be able to assess its novelty and inventive step (see Case Law of the Boards of appeal of the EPO, 6th edition, 2010, II.B.5.3.1, second paragraph and decision T 1321/04 [2.3])

[3.5] As far as the main request is concerned, neither the description nor the drawings have been modified, so that the published version is decisive.

As can be seen from the description […] and as stated by the appellant during the oral proceedings, the transmission elements shown in the drawings and described in the description all correspond to embodiments of the invention. Therefore, they are to be used in the above mentioned interpretation of the claims.

[3.6] In the impugned decision features corresponding to features (i) and (ii) have been interpreted narrowly in the light of the description and considered to be features distinguishing [the invention] from D3.

The description and the drawings of the application describe embodiments (see […] figure 7) wherein a transmission element in the form of a plate has a recess 176 and, therefore, two ledges (Vorsprünge).

This [feature] is used to make a relative movement between the transmission element and the housing 130 possible. Moreover, the transmission element has a convex surface the upmost area of which forms the second bearing area.

Similar to this embodiment of the application, the transmission element 14 depicted in figure 4 of document D3 […] has a buckling (Wölbung) towards the inside on its lower part, in order to make a rotational movement of the transmission element 14 possible without striking against the valve body 3. Moreover, the upper part of the transmission element 14 is only slightly curved and forms a bearing area.

Therefore, the Board is of the opinion that in the light of the description, the drawings and the dependent claims, the term “plate” is to be interpreted such that it also encompasses surfaces having steps, recesses and convex surfaces. Therefore, the transmission element 14 disclosed in document D3 is to be considered to be a “plate” within the meaning of the application. Indeed, the term is actually used […] in document D3 for the transmission elements 30 depicted in figures 8 to 10. Therefore, document D3 also discloses feature (i).

[3.6.1] Besides the above mentioned embodiment of the application, with has been described with regard to figure 7, wherein a bearing area is formed by a convex surface, the application also discloses another embodiment (figure 8) comprising a bearing area formed by a rounded portion.

Claims 37 and 41 also claim a transmission element having a convex or rounded surface, respectively.

Therefore, the Board is of the opinion that the expression “substantially flat surfaces” is to be interpreted such that it also encompasses convex or rounded surface, respectively.

As document D3 discloses that the bearing areas are curved, wherein the curvature is to be as small as possible […], the Board is of the opinion that feature (ii) is also disclosed in document D3.

[3.7] For the above reasons all the features of claim 1 are disclosed in document D3. Therefore, the subject-matter of this claim is not novel over document D3 ( A 52(1) and A 54(1) EPC 1973).

As a consequence, the main request cannot be allowed.

The White Book II.B.5.3.1 tells us that “In a number of decisions, … the boards of appeal have laid down and applied the principle whereby the description and drawings are used to interpret the claims and identify their subject-matter, in particular in order to judge whether it is novel and not obvious.” I think this approach, which recalls A 69, makes sense because you cannot interpret words without knowing their context.

As already mentioned above (and also stated in II.B.5.3.2), several Boards have expressed concerns against using A 69 in novelty assessments. Now it is true that the present decision does not explicitly invoke A 69, but does this really make a difference?

I can see two differences.

First, A 69 refers to the description and the drawings, whereas the present approach adds the dependent claims.

Secondly, A 69 comes with its Protocol of interpretation. At first sight this looks desirable, even in novelty assessments, because article 1 of the Protocol excludes extreme options of interpretation. However, there is good reason to avoid A 69 because article 2 of the Protocol introduces the notion of equivalents, which is not something you would want to see in a novelty assessment.

At the end of the day, I would think that the Board has chosen the right approach by taking into account the description and the drawings when interpreting the claims, without referring to A 69. 

Any comments?

To read the whole decision (in German), click here.

The file wrapper can be found here.

T 824/10 - Don’t Take It For Granted

Now that the Boards are not competent for dealing with protests under the PCT any more, the question of unity of invention has become rare in the case law of the Boards of appeal. But it has not disappeared altogether, as the present decision shows.

The applicant filed an appeal against the decision of the Examining Division (ED) to reject the application under consideration.

The application had been filed under the PCT. The claims as filed were directed at (1) the use of plasma membrane calcium ATPase (PMCA) inhibitors to inhibit sperm mobility in order to achieve a contraceptive effect (claim 1 and dependent claims), (2) a contraceptive composition comprising a PMCA inhibitor and a pharmaceutically acceptable carrier (claim 10 and dependent claims), and (3) a method for diagnosing infertility in a human male, comprising identifying a mutation or a post-translational modification of a gene encoding the PMCA (claim 13).

The EPO acting as ISA had found the application to contain six groups of inventions and had requested the applicant to pay five additional search fees.

Before the (EPO acting as) IPEA, on May 2, 2005, the applicant filed an amended set of eleven claims limited to the use of a particular PMCA inhibitor (i.e. an inhibitor directed against a plasma membrane calcium ATPase 4 (PMCA4) isoform). Claim 1 read (in English translation):

Use of plasma membrane calcium ATPase (PCMA) inhibitor for inhibiting sperm mobility in order to achieve a contraceptive effect, wherein the inhibitor is directed against the PMCA4 isoform.

The IPER only repeated the arguments and conclusions concerning the searched subject-matter.

After entry into the European phase, the EPO objected to the claims as referring to unsearched subject-matter and offered to establish a European search report in application of R 112 EPC 1973. The applicant paid an additional search fee but requested a search report for the whole set of claims on file because it was unitary.

The ED found the claims to lack unity and searched “invention 2”.

After some exchanges between the ED and the applicant, the latter filed a main request and two auxiliary requests as well as a request for reimbursement of the additional search fee. Claim 1 of all of the requests was identical to claim 1 filed on May 2, 2005. In the main request, the claim directed to a method for diagnosing infertility was deleted; in the first auxiliary request there was no claim directed to a contraceptive composition either. The second auxiliary request only contained claim 1.

The applicant withdrew its request for oral proceedings (OPs) and requested an appealable decision.

In its decision, the ED invoked R 164(2) and “independently” R 137(4) and explained that all the requests on file referred to unsearched subject-matter.

The main request before the Board was identical to the set of claims filed on May 2, 2005.

Here is what the Board had to say:

*** Translation of the German original ***

Unity of the main request before the Board

[3.1] Although R 164(2) EPC, on which the rejection was based, encompasses both the lack of unity of the present claims and (“or”) the fact that the claimed subject-matter has not been searched, it follows from the overall context of the impugned decision that what is meant is the second situation (i.e. the one following the “or”). Hereinafter, this situation is referred to as “R 164(2), second subclause”.

It is true that the decision of the ED is not based on the question of whether the last filed requests lack unity, but their unity is denied. As the underlying argumentation […] has a considerable impact on the question of unity of the claims as filed and, consequently, on the division into (groups of) inventions, which then affects the question of whether the second search fee was correctly used, this decision also deals with the unity of the subject-matter of the main request before he Board. This request corresponds to the version that was before the ED, plus the claim directed at fertility diagnostics.

Document D1 cited in the examining proceedings refers to plasma membrane calcium ATPase (PMCA) but does not mention any isoform thereof, and in particular isoform 4 (PMCA4). The statement in the abstract of this document, according to which the inhibiting effect of gossypol on the plasma membrane calcium++ pump could be explained by the fact that gossypol influenced the sperm mobility by means of a mechanism related to the structure and functions of the plasma membrane cannot be affirmed conclusively for [establishing] an interaction of the inhibitor gossypol with the plasma membrane calcium ATPase isoform 4 (PMCA4).

Consequently, the reasons given in the communication of the ED dated October 27, 2006, i.e. that gossypol, which is the object of document D1, would also have an inhibiting effect on PMCA4, are only based on presumptions (“It appears credible that gossypol prevents not only the other isoforms of PMCA but also isoform PMCA4 …” […]) Therefore, within the framework of an a posteriori consideration of unity of a patent application, they cannot be used for asserting that the single inventive concept is not novel or for questioning that this concept does involve an inventive step.

Nor is there any concrete reason to presume that substances according to dependent claims 2 to 4 would not act as inhibitors of PMCA4 but would inhibit other PMCA isoforms […]. After all, the mention of those substances in the claims contains a reference to claim 1 and already comprised a reference to claim 3 concerning PMCA4 in the claims as originally filed in their most narrow, and, therefore, decisive form.

The subject-matter of each of claims 1 to 10 according to the present main request is connected by the teaching that PMCA4 inhibitors can hinder the mobility of sperm and, therefore, have a contraceptive effect, which is the single common inventive concept. Conversely, this corresponds to the concept that a defect in PMCA4 as such has to result in hindering the mobility of sperm and can, therefore, be a cause for natural male infertility. This common inventive concept within the meaning of Rule 13.1 PCT and A 82 EPC, respectively, also supports the unity of the application when claim 11 according to the main request is included.

If one retraces (wird … nachvollzogen) the argumentation of the ED based on the problem solved such that the known feature “Disturbing the functionality of PMCA results in reducing the motility of sperm cells” is taken into account, one also comes to the conclusion that there is unity of invention between the subject-matter of claims 1 to 10 and the subject-matter of claim 11.

[3.2] As already explained under point [3.1] of this decision, the impugned decision […], which cites R 164(2) EPC and R 64(1) EPC as well as “independently” R 137(4) EPC, is based on the assertion that in particular the uses according to claims 1 of the different requests still encompassed unsearched subject-matter (R 164(2), second subclause).

According to its response to the notification pursuant to R 112 EPC 1973 dated June 19, 2006 (i.e. together with is written submission dated July 18, 2006, which is before the entry into force of the EPC 2000 and its new R 164) the appellant has paid a second search fee with the comment that a search be carried out for claims 1 to 11 that had already been filed together with the request for IPE dated May 2, 2005 ([…] these claims correspond to the present main request).

Despite this, the ED has carried out a search of invention 2 as defined in the invitation to pay further search fees dated October 15, 2004.

According to the wording of R 64(1) EPC, however, the European search report shall be drawn up for the parts of the application relating to inventions in respect of which search fees have been paid (Board’s emphasis). This means that the [applicant] has to indicate how it wants the paid search fee to be used and the search report is to be established for the corresponding invention.

In the present case, the ED was of the opinion that the initial and abiding lack of unity made it impossible to direct the search to the subject-matter indicated by the [applicant]. Even if this opinion was correct, the ED was not free to arbitrarily search the originally defined invention 2 but it had to at least try to clarify with the [applicant] for which subject-matter – which both sides agreed to be unitary – the search fee was to be used.

As this has not been done, it was impossible to define, at the moment of the decision, which subject-matter had definitely not been searched, and it was impossible to make the statement that the claims according to the requests on file did contain unsearched subject-matter.

Therefore, there was no basis for the decision of the ED – as a consequence, the decision has to be set aside.

[3.3] The further examination to be carried out after remittal to the ED will have to deal with all formal and substantial aspects of the EPC, including the examination of the amendments with respect to the requirements of A 123(2), the need to carry out corresponding searches and the decision of whether the second search fee is to be refunded or not.

To read the whole decision (in German), click here.

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T 888/07 – Revival

This decision also deals with an alleged substantial procedural violation committed by the Examining Divison (ED):

[8.1] The appellant argued that after non-admission of the main request filed during oral proceedings, the version previously standing would have remained in the previous state and was still pending. The ED therefore would have had to give reasons according to R 68(2) EPC 1973 for this request. Failing to do so constituted a substantial procedural violation.

[8.2] This point of view is, however, not correct. By replacing a request, the former request is no longer pending.

According to R 86(3) EPC 1973, last sentence, no further amendment may be made without the consent of the ED. Also according to the case law an ED has a discretion to allow amendments until the issue of the decision to grant (see G 7/93 [order 1] and G 12/91). If a request for amendment is refused, the ED must inform the applicant of the reasons for not admitting the amendments such that the applicant has the opportunity to comment on them in order to satisfy the right to be heard according to A 113(1). If the applicant maintains his request for amendment, the application has to be refused under A 97(2), since there is no text which has been approved by the applicant and allowed by the ED (see A 113(2), decisions T 647/93; T 946/96 and T 237/96).

A 113(2) states that the EPO shall consider and decide upon the European patent application or the European patent only in the text submitted to it, or agreed, by the applicant or the proprietor of the patent. In the present case the ED refused to consent to the introduction into the procedure of the claims submitted during oral proceedings, which had been put forward in substitution for the claims on file before.

Deciding to refuse an application on the grounds that the claims previously on file were not allowable would have contravened A 113(2) EPC 1973, since these claims were no longer pending. If the ED refuses consent to the latest amended set of claims under R 86(3) EPC 1973 this does not automatically revive the previous set of claims that the ED had consented to consider, unless the applicant has indicated that he was relying on these as an auxiliary request.

There was no such indication here, since the appellant did not even mention that the claims filed on 12 December 2006 and/or the claims filed on 29 July 2005 constituted auxiliary requests.

[8.3] As can be seen from the minutes of the oral proceedings […], the chairman explicitly brought the legal situation and the corresponding consequences to the attention of the appellant's representative, who did not present any observations […] and apparently did not react according to his intentions (e.g. by referring to the auxiliary requests believed to be pending or by filing a further request). The appellant did not question the correctness of the minutes after they were sent to the party and before the appeal proceedings. The correctness of the minutes is therefore not formally in doubt and the board has to consider the minutes as correctly reflecting the course of the oral proceedings (see R 11/08 [16]). The appellant's representative could be expected to be aware of the legal situation, in particular after having actually been warned of the legal consequences.

[8.4] Therefore, the board comes to the conclusion that the applicant's right to be heard (A 113(1) EPC 1973) has been observed. In the board's view, the procedural issues referred to by the appellant do not constitute a substantial procedural violation which would justify the reimbursement of the appeal fee.

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T 888/07 – Don’t Be So Negative

The applicant filed an appeal after the Examining Division (ED) had rejected the application under consideration.

The Board found claim 1 of the main request not to comply with the requirements of A 84 because one essential feature was missing from the independent claims. It then dealt with auxiliary request 1, Claim 1 of which read:

A system for supporting mobile IP, comprising:

• a controlling foreign agent (CFA1, CFA2) managing communications in a service region (RA1, RA2); and
• a plurality of paging foreign agents (PFA1, PFA2, PFA3, PFA4, PFA5, PFA6) managing respective paging areas within the service region, the paging foreign agents configured to register new location information of a mobile node (MN) upon the mobile node moving into the paging area of one of the plurality of paging foreign agents from the paging area of another of the plurality of paging foreign agents;

characterized in that the paging foreign agents are configured to transmit the new location information to the controlling foreign agent if the mobile node is in an active mode at the time of entering the respective paging area and to withhold transmission of the new location information to the controlling foreign agent if the mobile node is in an idle mode at the time of entering the respective paging area. (my emphasis)

The Board again raised a clarity issue:

[3] Claim 1 of this request still comprises the wording “withhold transmission” which was objected to during the first-instance proceedings because it was a negative feature.

[3.1] The board is of the opinion that a feature with such wording is originally disclosed (see e.g. original claim 14), in contrast to the ED’s argument presented in point 1.2 of the communication dated 1 April 2005. Such a negative limitation can therefore be deduced from the application as filed (see T 278/88).

[3.2] However, negative limitations may be used only if adding positive features to the claim either would not define more clearly and concisely the subject-matter still protectable (see T 4/80) or would unduly limit the scope of the claim (see T 1050/93). Both of the cited cases relate to a chemical process and use a negative limitation to clearly define a chemical substance used as an agent in the process.

In the present case the negative limitation relates to a registration step which may be omitted under specific circumstances. These circumstances contribute to the claimed solution. Therefore the subject-matter should be specified in this case by using positive features such as for example the principle of regional registration and local registration as disclosed in Figures 6 and 7 and in paragraphs [0060] to [0070] of the published application.

Claim 1 of auxiliary request I therefore does not fulfil the requirements of clarity pursuant to A 84.

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The file wrapper can be found here.

NB: There will be more of this decision in the next post.

T 1389/10 – Suitable For

The present decision is not surprising at all but it presents us with a nice application of the “suitable for ...” doctrine.

The patent proprietor filed an appeal against the decision of the Opposition Division to revoke the opposed patent for lack of novelty and inventive step.

Claim 1 of the main request before the Board read:

The protective case for enclosing a delicate object, of the type of objects that are portable such as mobile phones, glasses, remote controls for electronic home appliances etc., the case comprising a tubular body formed from a circular knitted fabric (as hereinbefore defined), an elastic section suitably dimensioned to define a mouth at one end of the tubular body, and a seam that provides a permanent closure of the opposed end of the tubular body, wherein the elastic section is configured to facilitate the closure of the mouth of the tubular body preventing accidental exit of the delicate object that is contained inside the case. (my emphasis)

Interpretation of Indefinite Requests

[2] In the letter of 23 June 2011, page 2/6, final paragraph, the [patent proprietor] states that

“[he] would be willing to accept any other more accurate wording that would refine further the concept to English speakers. Maybe something along the following lines”

and then on page 3/6 offers the following four alternative versions of the opening lines of claim 1 (using the [patent proprietor’s] notation):

I: “A protective case for enclosing mobile phones, glasses, remote controls for electronic home appliances and any other portable objects”

II: “A protective case for enclosing mobile phones, remote controls for electronic home appliances and any other electronic portable objects “

III: “A protective case for enclosing mobile phones and other electronic portable objects”

IV: “A mobile phone protective case”.

The Board notes firstly that in particular in inter partes appeal proceedings, where impartiality of the Board is fundamental to due process and the principle of fairness, it is not incumbent on the Board to make suggestions as to claim wording. That responsibility must remain firmly with the [patent proprietor]. The Board shall, however, in the following consider these alternative formulations as like numbered auxiliary requests - i.e. auxiliary requests I to IV - each directed at a correspondingly amended claim 1.

Background & Claim Interpretation

[3.1] The patent is directed at a protective case for delicate objects - in particular portable objects such as mobile phones, glasses, remote controls. The case is defined by its constructional features of a tubular body of circular knitted fabric which has an elastic section defining a mouth at one end, and a closing seam at the other end. The use of knitted fabric protects the delicate objects from damage by banging or scratching, while the elastic mouth section prevents them from accidentally slipping out, see specification section [0005].

[3.2] As stated in the Board’s communication of 25 January 2011, it is long standing office practice that a formulation such as “apparatus for” is to be interpreted as meaning an apparatus which is suitable for the stated use, see for example the Guidelines C-III.4.13, see also T 69/85 [2.2.8]. As explained in the Guidelines, as e.g. in the case of a mould for molten steel, the stated use may imply certain physical limitations (size, material) without which the apparatus could not be used for that purpose. Any prior art apparatus which, in addition to features expressly mentioned in the claim also possesses these implicit physical features and can thus reasonably be used for the stated purpose will then take away novelty of the claimed apparatus. This is irrespective of whether or not the prior art mentions the stated use or purpose or whether the stated use is obvious or not. This is because the claim is directed at the apparatus, not its use. Nor can stating a use that is new and not-obvious render an apparatus which is already known novel and inventive, see also the Case Law of the Boards of Appeal, 6th edition 2010, I.C.5.3.3 and the case law cited therein, in particular T 215/84, T 523/89, T 637/92.

[3.2.1] The various versions of claim 1 are all directed at a protective case defined by the same physical features: circularly knitted, tubular body, elastic mouth section at one end, closing seam at the other. Undoubtedly, these features define the claimed subject-matter as an apparatus or device, i.e. as a physical object. Its intended use lies in the indication that it is a “protective case for delicate objects”, with the particular objects limited in varying degree in the different requests. In the final auxiliary request claim 1 is to “a mobile phone protective case”, which the Board reads as equivalent to “a protective case for mobile phones”.

[3.2.2] This intended use will imply certain properties of the knitted material to be able to protect a delicate object or mobile phone. For example, the material should be soft and not abrasive. It also implies an appropriate size of the article to accommodate the object/phone within it.

[3.2.3] Using the usual rules of construction, in particular those concerning intended use or purpose of an apparatus, the Board then arrives at a construction of claim 1 as directed at any article that has a circularly knitted, tubular body, with an elastic mouth section at one end and closed by a seam at the other, and which is made of appropriate material and has an appropriate size so that it can be used as a protective case for the objects in question.

Lack of Novelty

[4.1] With the above understanding of claim 1 the Board must then, in assessing novelty, determine whether any of the cited prior art discloses articles with all the above features, explicit and implicit, and which therefore could conceivably be used as a protective case for the objects concerned, even that use is not foreseen in that prior art, see above.

[4.2] Turning first to D2, this document concerns a protective receptacle for spectacles, see title. The receptacle, shown in figure 1, comprises an envelope formed from a tube, i.e. a tubular body, column 4, line 10, which may be formed of knitted material, column 4, lines 28 to 29, see also column 6, lines 8 to 10.

The tube is continuously knitted (without a seam) at its circumference, as is clearest from the cross-sections 5 and 7 in particular, meaning that when knitted, it must be circularly knitted. Either end 21A or 21B can be sewn closed, column 4, lines 17 and 18, thus forming a seam providing a permanent closure at one end. The other (not sewn) end may have “an end closure such as a tightly woven end portion [as in figures 1 and 2] as a tapered or a restricted end”, column 4, lines 21 to 24. This is clearly meant to facilitate closure and has the same function as the alternative closures of figures 7A to 7C, namely to prevent the spectacles from accidentally exiting.

As explained in column 4, lines 28 to 34, the envelope material is elastic so as to expand to accept the spectacles, and thereafter contract to engage them. This applies naturally also to the end section, which, is also elastic, in particular if the material is knitted.

The material is so as to protect spectacles within the tube, e.g. wool or cotton, column 4, line 30. Similarly, it goes without saying that this receptacle which is specifically meant for spectacles will be sized accordingly. Spectacles or glasses, the Board notes, are expressly mentioned in the patent, see specification paragraph [0001] as an example of a delicate object that the case should protect.

In summary, the receptacle of D2 has all the physical features that are expressly mentioned in all versions of claim 1. It also has those implicit in the use stated in claim 1 of the main, first auxiliary and auxiliary request I, which all mention glasses as delicate object. This is only natural as the D2 receptacle is also meant to protect and hold glasses.

If perhaps spacious for a relatively small mobile phone, the D2 receptacle could nevertheless also hold and protect remote controls or other electronic portable devices such as a portable game console, that are of the same size as a pair of glasses. It thus also meets the size requirement implicit in the limited use stated in claim 1 of auxiliary requests II and III.

The Board concludes that the case of claim 1 of the main and first auxiliary request and of auxiliary requests I to III lacks novelty vis-à-vis the protective spectacle receptacle of D2.

[4.3] D7, see its opening paragraph, relates to a knitted article intended to cover the toe portion of a foot.

The article, shown in figures 1 to 3, has a seamless or circular[ly] knit main body 10, column 2, lines 5 to 6, produced in the form of a tubular fabric on a circular knitting machine, column 2, lines 26 to 28, i.e. is an essentially tubular body. It has a cuff or welt 13 at one open end, column 2, line 29, which may have elastic yarn incorporated, column 3, lines 10 to 11, and thus forms an elastic end section defining a mouth. At the other toe end the tube is closed as described in column 2, lines 36 to 40, to form what is effectively a seam 21 as permanent closure, see also the figures.

The size and material of the sock are intended to protect the toes of a foot. Even though D7 does not mention such a use, its sock has all the features that allow it be used to hold and protect a mobile phone, a portable electronic device or any other delicate object of about the same size as the toe portion of a foot. The elastic cuff or welt 13 would then prevent the object from slipping out accidentally.

The subject-matter of claim 1 in all versions lacks novelty over the toe sock of D7.

[4.4] Finally, D8 describes an undersock or foot cover, see title, shown in figures 3,4.

This undersock is formed of a knitted tube 1 formed on a circular knitting machine, page 2, lines 1 to 4, i.e. a circularly knitted tube. A rubber thread 2 is knitted into open rim 2, page 2, lines 6 to 10, figure 3, forming an elastic section defining a mouth at the tube’s open end. At the other end it is closed by a seam 10, page 2, line 57 to 61, figure 3, providing permanent closure.

Dimensions are in the order of several centimetres, page 2, lines 19 to 21, and the material can be a crimped or stretch yarn, page 2, lines 62 to 64, making the sock extremely elastic and extensible, page 2, lines 76 and 77, so that it can fit over a foot.  

D8 also does not mention its use as a protective case for delicate objects. However, it has all the features that would allow it be used that way. Thus, it can hold and protect, say, a mobile phone or other portable electronic device that easily fits inside the stretchable material and stays inside due to the elasticized rim section.

This known undersock thus also takes away the novelty of claim 1 in any of its versions.

[4.5] None of the proposed versions of claim 1 include a limitation, explicit or implicit, that the case is specially constructed to loosely hold a (mobile) phone, and the Board can thus not take this feature in consideration when assessing novelty of the case as claimed. However, even if claim 1 had been so limited, given the small size of many mobile phones, the toe sock of D7 meant to cover the front portion of the foot, see figure 1, would most likely meet that limitation for such phones. Vis-à-vis D7 this feature would therefore not be able to establish novelty.

[5] As set out above, the subject-matter of claim 1 in all its versions lacks novelty, contrary to A 52(1) in combination with A 54. None of the requests on file are therefore allowable and the Board thus confirms the OD’s decision to revoke the patent.

One might add that this approach is based on the EPO’s practice and is not common to all the contracting states. In France, for example, the Supreme Court (Cour de cassation), in a famous decision dated June 6, 2001, has established that novelty of purpose is to be taken into account in a novelty assessment:

« … pour être comprise dans l’état de la technique et être privée de nouveauté, l’invention doit s’y trouver tout entière dans une seule antériorité au caractère certain, avec les mêmes éléments qui la constituent dans la même forme, le même agencement et le même fonctionnement en vue du même résultat technique, … » (my emphasis)

which might by translated as follows :

“… in order to form part of the prior art and to be deprived of novelty, the invention must be found there entirely, in a single and certain prior art document, comprising the same elements which constitute the same form, the same arrangement and the same function in view of the same technical result, …”

Therefore, I doubt that a French court would consider the protective case to be anticipated by the toe protector or the undersock disclosed in documents D7 and D8, respectively.

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